United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88413853
Mark: START INS
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Correspondence Address: FROSS ZELNICK LEHRMAN & ZISSU, P.C.
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Applicant: WeWork Companies Inc.
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Reference/Docket No. WEWO 1904725
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 09, 2019
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4850839. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s applied-for mark is START INS in standard characters for “Providing co-working facilities equipped with desks, private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities; co-working by the hour; business information services; rental of office space; incubation services, namely, providing work space containing business equipment and other amenities to emerging, start-up and existing companies; business development services, namely, providing business administration support for the new businesses of others; providing office support services” and “Financial affairs; monetary affairs; financial services; investment services; Venture capital financing; providing venture capital and development capital; real estate financing; financing of real estate leases; incubation services, namely, providing financing to start-ups, emerging companies and existing businesses.”
Registrant’s mark is START IN GARAGE in standard characters for “Providing educational mentoring services and programs in the field of providing resources to grow their startups into global companies.”
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
In this case, the only wording START INS in applicant’s applied-for mark is substantially similar to the wording START IN in registrant’s mark. This shared wording creates a similar overall commercial impression in the compared marks.
Further, START INS/ START IN is the dominant wording in each of the respective marks.
START INS is the only wording in applicant’s applied-for mark, and START IN is the first wording in registrant’s mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 102 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). Therefore, consumers are inclined to focus on the virtually identical wording in applicant’s applied-for mark and in registrant’s mark when making their purchasing decisions.
Moreover, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in appearance, sound, meaning, connotation and commercial impression in the respective marks, that applicant's services provided under the START INS mark constitute a new or additional line of services from the same source as the services provided under the previous START IN GARAGE mark with which they are acquainted or familiar, and that applicant’s mark is merely a variation of the registrant’s mark. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b). Here, the compared marks are sufficiently similar in terms of their overall commercial impression that consumers who encounter the marks are likely to assume a connection between the parties.
Based on the foregoing, the applicant’s applied-for mark and registrant’s mark are sufficiently similar to find a likelihood of confusion.
Comparison of the Services
Here, applicant’s “Providing co-working facilities equipped with desks, private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities; co-working by the hour; business information services; rental of office space; incubation services, namely, providing work space containing business equipment and other amenities to emerging, start-up and existing companies; business development services, namely, providing business administration support for the new businesses of others; providing office support services” and “Financial affairs; monetary affairs; financial services; investment services; Venture capital financing; providing venture capital and development capital; real estate financing; financing of real estate leases; incubation services, namely, providing financing to start-ups, emerging companies and existing businesses” are related to registrant’s “Providing educational mentoring services and programs in the field of providing resources to grow their startups into global companies” because it is common for the same entity to provide educational mentoring services and programs featuring resources to assist the growth of startups, as well as provide co-working facilities, business information, work spaces for emerging, start-up and existing companies, business administration support for the new businesses of others, financial services, investment services, venture capital financing, and financing to start-ups, emerging companies and existing businesses. Therefore, consumers encountering applicant’s applied-for mark and registrant’s mark used in connection with the respective services are likely to believe that the services emanate from the same source.
The attached Internet evidence consists of web pages from the websites of Techstars, Arpatech, and JumpStart, showing that these entities provide educational mentoring services and programs featuring resources to assist the growth of startups, as well as co-working facilities, business information, work spaces for emerging, start-up and existing companies, business administration support for the new businesses of others, financial services, investment services, venture capital financing, and financing to start-ups, emerging companies and existing businesses. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark, and that the relevant services are provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
To the extent the evidence may not address all of applicant’s services, applicant should note that relatedness does not have to be established for every good or service in an identification. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some item(s) encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness has been established for many of the identified items, which is enough to show a likelihood of confusion.
Based on the attached evidence and the analysis above, applicant’s and registrant’s services are related.
Because applicant’s and registrant’s marks are similar and the services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Trademark Act.
Classification and Identification of Services
The wording “co-working by the hour” in the identification of services for International Class 35 is indefinite and must be clarified because it does not make clear what the services are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. This wording must also be clarified because it is too broad and could encompass services in other international classes, as specified below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
The wording “incubation services, namely, providing work space containing business equipment and other amenities to emerging, start-up and existing companies” [emphasis added] in the identification of services for International Class 35 is indefinite and must be clarified because applicant must specify what the other amenities are to ensure proper classification in Class 35. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Financial affairs” and “monetary affairs” in the identification of services for International Class 36 is indefinite and must be clarified because it does not make clear what the services are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “financial services” and “investment services” in the identification of services for International Class 36 is indefinite and must be clarified because the type(s) of financial services and investment services must be specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 035: Rental of desks, office equipment, printers and telecommunications equipment in co-working facilities; providing facilities for business administration equipped with private offices, mailroom, kitchen, meeting rooms and other office amenities; providing office support staff services of a receptionist; co-working by the hour, namely, rental of office equipment in co-working facilities on an hourly basis; providing business information; incubation services, namely, providing work space containing business equipment and other office equipment to emerging, start-up and existing companies; business development services, namely, providing business administration support for the new businesses of others; providing office support staff services
Class 036: Financial affairs and monetary affairs, namely, financial information, management and analysis services; financial services, namely, {clarify the nature of the services in Class 36, e.g. wealth management services, money lending, Financial analysis and research services, Financial advice and consultancy services}; investment services, namely, {clarify the nature of the services in Class 36, e.g. investment risk assessment services, investment advisory services, real estate investment services, financial investment brokerage services, investment banking services}; Venture capital financing; providing venture capital and development capital; real estate financing; financing of real estate leases; incubation services, namely, providing financing to start-ups, emerging companies and existing businesses; co-working by the hour, namely, rental of offices for co-working on an hourly basis; rental of office space
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Advisory: U.S. Counsel Rules Changes
On August 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions. All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct.
These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register. See the U.S. Counsel Rule change webpage for more information.
Response Guidelines
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Leslie Ann Thomas-Riggs/
Leslie Ann Thomas-Riggs
Trademark Examining Attorney
USPTO, Law Office 125
(571) 272-5469
leslie.thomas-riggs@uspto.gov
RESPONSE GUIDANCE